Advanced Copyright Issues on the Internet - Fenwick & West LLP

(f)Protection of Certain Industrial DesignsTitle V of the DMCA adds a new Chapter 13 to the copyright statute entitled “Protectionof Original Designs.” Although as currently enacted, Chapter 13 protects only vessel hulldesigns 1022 with a copyright-like design right, its provisions are drafted in the form of a generalindustrial design protection statute. Merely by changing a definition in the statute, Congress canin the future easily extend the scope of industrial designs that are protected. To obtainprotection, the statute requires that the owner of the design register the design with the <strong>Copyright</strong>Office within two years of making the design public as embodied in a useful article. Title V ofthe DMCA originally provided that the design protection statute would be effective for an initialtrial period of two years. However, Section 5005(a)(2) of the Intellectual Property andCommunications Omnibus Reform Act of 1999 1023 deleted this two-year sunset provision.(1) Protection of Designs Embodied in Useful ArticlesSection 1301(a) of the statute provides generally that the “designer or other owner of anoriginal design of a useful article which makes the article attractive or distinctive in appearanceto the purchasing or using public may secure the protection provided by this chapter uponcomplying with and subject to this chapter.” Section 1301(b)(2) defines a “useful article” as a“vessel hull or deck, 1024 including a plug or mold, which in normal use has an intrinsic utilitarianfunction that is not merely to portray the appearance of the article or to convey information. Anarticle which normally is part of a useful article shall be deemed to be a useful article.” It isapparent that, although this definition is currently limited to vessel hulls and decks, the phrase“vessel hull or deck” in the definition could easily be replaced with a generic phrase such as“article,” thereby extending protection to general industrial designs. Alternatively, enumeratedcategories of designs in addition to vessel hulls or decks could easily be added to the definition.(2) OriginalityThe statute establishes a low threshold of originality for protection. Specifically, Section1301(b)(1) provides that a design is original “if it is the result of the designer’s creative endeavorthat provides a distinguishable variation over prior work pertaining to similar articles which ismore than merely trivial and has not been copied from another source.” Although this is a low1022 Title V overrules Bonita Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989), in which the SupremeCourt barred states from protecting unpatented boat hulls because such protection conflicts with the federalpolicy favoring free competition in inventions not qualifying for patent protection.1023 P.L. 106-113 (1999).1024 Section 1301(b)(3), as amended by Section 5005(a)(2) of the Intellectual Property and CommunicationsOmnibus Reform Act of 1999, P.L. 106-113, defines a “vessel” as “a craft--(A) that is designed and capable ofindependently steering a course on or through water through its own means of propulsion; and (B) that isdesigned and capable of carrying and transporting one or more passengers.” Under Section 1301(b)(4), asamended by the Vessel Hull Design Protection Amendments of 2008, P.L. 110-434, a “hull” is “the exteriorframe or body of a vessel, exclusive of the deck, superstructure, masts, sails, yards, rigging, hardware, fixtures,and other attachments” and a “deck” is “the horizontal surface of a vessel that covers the hull, includingexterior cabin and cockpit surfaces, and exclusive of masts, sails, yards, rigging, hardware, fixtures, and otherattachments.”- 233 -